One of the most widely used and accepted methods for establishing trademark infringement is to conduct a likelihood of confusion survey among the relevant consumer population. Survey evidence in trademark cases can be a powerful and persuasive piece of evidence. It...
Blog Category: Trademark
Applied Marketing Science’s survey rebuttal is key in recent TTAB decision
In the recent TTAB decision (Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., Consolidated Opposition No. 91213527 and Cancellations Nos. 92059629 and 92059455), Applied Marketing Science, Inc. Chairman Robert Klein provided rebuttal testimony on...
Genericness survey cited as a basis for ruling that the Booking.com trademark is not generic
In the end, a consumer survey helped carry the day for Booking.com. The matter, Booking.com B.V. v. Matal, was interesting in that plaintiff filed a civil action challenging the TTAB’s finding that the mark “BOOKING.COM” is generic for travel agency services and hotel...
Trademark dilution surveys: the senior user must first prove that its mark is famous
Before commissioning a trademark dilution survey, plaintiffs must first establish that its senior mark is famous. One of the most widely used and accepted methods for establishing fame is to conduct a fame survey among the relevant consumer population. In Navajo...
The importance of survey evidence to establish secondary meaning and likelihood of confusion
In Milk Street Cafe, Inc. vs. CPK Media, LLC, the plaintiffs claimed that their “Milk Street Cafe” trademark had acquired secondary meaning and that CPK’s use of the “Christopher Kimball’s Milk Street” mark was likely to cause confusion. U.S. District Judge Denise J....
Frequently Asked Questions about Surveys for IP Cases
As a follow-up to our webinar, “Survey Evidence in Intellectual Property (and other) Litigation,” Applied Marketing Science answers a few questions about surveys for intellectual property cases. Q. What is the difference between the Squirt survey and Eveready survey...
Barker Boatworks Granted Summary Judgment in Trade Dress Dispute with Yellowfin Yachts
Recently in the Middle District of Florida (8:15-cv-00990-SDM-TGW), United States District Judge Steven D. Merryday granted the motion for summary judgment by defendant Barker Boatworks, LLC, after having found that plaintiff Yellowfin Yachts, Inc. failed to show...
Walmart Stores Ordered to Disgorge to Variety Stores, Inc. Over $32,000,000
Recently in the Eastern District of North Carolina (5:14-CV-217-BO), United States District Judge Terrence W. Boyle ordered Walmart Stores to disgorge to Variety Stores, Inc. over $32,000,000 in profits after having previously found Walmart to have willfully infringed...
With No Survey for Support, Bodipedic Mark is Put to Rest
A November 13, 2015 TTAB decision (Dan Foam ApS v. Innocor, Inc., Cancellation No. 92054201 resulted in the cancellation of the Bodipedic and design trademark based on a likelihood of confusion with the petitioner’s Temper-pedic design mark. The Bodipedic mark had...
TTAB Ruling Precludes Subsequent Litigation (as Predicted)
The Supreme Court ruled in B&B Hardware, Inc. v. Hargis Industries that a TTAB ruling can have (in certain cases) a “preclusive effect” on subsequent actions in federal court (see earlier blog entry here.) Some commentators had expected that this would...
Losing Interest in Initial Interest Confusion
The recent decision by the Ninth Circuit in MultiTime Machine, Inc. v. Amazon.com, Inc. could spell the beginning of the end of “initial interest confusion” as a cause of action in internet commerce cases. In this particular case, Amazon did not sell the watches made...
Understocked on Survey Evidence
A recent Trademark Trial and Appeal Board (TTAB) decision in the matter of Overstock.com, Inc. v. J. Becker Management rejected Overstock.com’s opposition to the registration of this mark: Overstock.com had complained that the registration would cause confusion with...
For Lack of a Survey…(This Time on Fame at the TTAB)
John Welch blogged about the TTAB’s decision to sustain the opposition to registration of the mark THE HOUSE THAT JUICE BUILT (and a related design mark) for various baseball related items. The Board found that both marks were likely to cause dilution-by-blurring of...
New Evidence that “Good Data Drives Out Bad Cases”
A 2015 article published by Shari Diamond and David Franklyn reports the results of a survey(!) of trademark attorneys on the role that surveys play in the ultimate resolution of a case. They note that a “consumer survey that measures consumer confusion is an...
Could a Survey Have Saved This Trademark?
The Court of Appeals for the Federal Circuit (CAFC) has affirmed the TTAB’s ruling that NOPALEA is merely descriptive when used for a dietary supplement that contains Nopal juice. (John Welch blogs about the decision here.) TriVita (the applicant) contended that the...
Supreme Court Raises the Stakes at the TTAB
The 2015 Supreme Court ruling in B&B Hardware, Inc. v. Hargis Industries means that the Trademark Trial and Appeal Board (TTAB) will get a lot more attention and resources than they have in the past. Previously, the TTAB was often viewed as nothing more than a...
For Want of a Survey…
A recently decided case in the Middle District of Florida (Pods Enterprises v. U-Haul International) showed how the lack of survey evidence can seriously weaken a claim that a trademark is generic. Pods sued U-Haul for infringement of its federally registered “PODS”...